FFW wins cutting-edge High Court patent case
25 November 2004
City law firm Field Fisher Waterhouse claimed victory for
Pioneer Trading Co. in its High Court patent case against Nikken
Kosakusho UK Ltd. It comes at a time when judicial trends
surrounding UK patent law are in a state of flux, and is the third
judgment in this litigation to make new patent law.
In the summer of 2003, Nikken, a leading Japanese manufacturer
of high-speed machine tool holders, issued injunctive proceedings
against Pioneer alleging patent, copyright and trade mark
infringement and passing off in respect of milling chucks
manufactured by Pioneer. The chucks contained a groove to improve
gripping torque in the chuck, which Nikken claimed infringed their
patented groove.
In August 2003, Mr Justice Jacob, in his final case before his
promotion to the Court of Appeal, refused to grant an injunction
for failure to show a seriously arguable case, without needing to
go on to consider the balance of convenience. Jacob J took the
unprecedented step of awarding Pioneer its costs of the injunction
application, which he assessed on a summary basis to be paid within
14 days.
In the light of Jacob J’s comments, Nikken (represented by DLA)
subsequently withdrew its entire claim over the next few months.
Pioneer counterclaimed for a declaration of non-infringement and
invalidity on the grounds of lack of novelty and obviousness, which
Nikken resisted.
At the trial in May 2004, after the close of the evidence Nikken
withdrew its objections to the declaration of non-infringement
sought by Pioneer, leaving only the revocation action to be
considered. Mr Justice Mann found the patent invalid for lack of
novelty on the grounds that the invention was anticipated by a
groove contained in a chuck made by a competitor, Daishowa, during
the 1980s. His judgment dealt extensively with claim construction,
in particular dealing with the hitherto difficult issue of the use
of subjective language in a supposedly objective document.
Following judgment, Nikken then applied to amend the patent on
the ground that if the invention were limited to a groove of a
specified depth of 3 to 5 mm, it would not have been anticipated by
the prior art. Mann J rejected the proposed amendment and agreed
with Pioneer that far from limiting the claims, the proposed
amendments contained new teaching and therefore disclosed
additional matter which should have been raised before the trial,
and as a matter of public policy. Mann J refused leave to appeal,
although Nikken have now sought leave from the Court of Appeal.
Field Fisher Waterhouse's team was lead by partner Jonathan
Radcliffe assisted by James Dennis and Bansi Shah. Jonathan
Radcliffe says:
“This judgment has hopefully quashed once and for all attempts by
losing patentees who have just had their patent revoked at trial to
sidestep that by trying to amend their patent. This tactic,
if allowed to go unchecked, would expose successful defendants to
multiple attacks by losing patentees seeking to re-litigate until
they got a result they liked.”
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